T 0611/90 - Fresh case in appeal (allowed) - #85

Rank: 85
No. of citations: 60

The underlying opposition of appeal case T 611/90 was based on an alleged lack of novelty and inventive step vis-à-vis written state of the art. In the appeal, the appellant/opponent put forward grounds which were entirely based on a new line of attack, namely an alleged public prior use (Art. 54). The Board had to consider whether the appeal was admissible, since the factual grounds on which the patent was revoked by the opposition division were not addressed by the appellant in his statement of grounds of appeal.

The Board considered that the statement of grounds of appeal was still within the same legal and factual framework as the opposition proceedings (as considered necessary in decisions G 9/91 and G 10/91) since the fresh reasons presented in the statement of grounds of appeal (i.e., public prior use) were still within the same original ground for opposition (i.e., lack of novelty).

The Board, however, found it appropriate to refer the case back to first instance, because appeal proceedings should not become a mere continuation of first- instance proceedings.

In a somewhat similar case, T 1146/06 refers to T 0611/90 as follows:

"In the present case, the statement of grounds of appeal does not address in detail all the issues of the reasoning of the decision under appeal and the evidence on which that decision relies. Instead, it develops new arguments mainly based on document D5 filed for the first time on appeal. However, the arguments are based on the same grounds of opposition as those on which the opposition and the decision under appeal were based, namely lack of novelty and of inventive step. According to the established jurisprudence of the boards of appeal, an appeal based on a fresh case may be admissible when the grounds for opposition have remained the same (e.g. T 611/90, OJ EPO 1993, 50, Reasons, point 2; T 389/95, Reasons, point 1; T 708/95, Reasons, point 1.2; T 1029/05, Reasons, point 1.10; T 1082/05, Reasons, point 1.1 or T 1557/05, Reasons, point 1.2)." (T 1146/06, point 3.5 of the reasons)

In brief, grounds of appeal may be admissible despite the fact that they are based on entirely new lines of attack, as long as the new lines of attack remain under the same ground(s) of opposition in the sense of Art. 100(a), (b), (c) (and G 7/95). (In practice, however, it may still be safe to add a few lines relating to the attacks used in the original opposition, to avoid any discussion on the admissibility of the appeal.)

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Headnote:

1. Under Article 106(1) EPC, appeals lie from decisions rather than from the grounds of such decisions. Apart from other deficiencies, an appeal raising a case entirely different from that on which the decision under appeal was based is still admissible if it is based on the same opposition ground (point 2 of the Reasons).
2. If there is such an entirely different case, it may, subject to the other circumstances of the case, be inappropriate for an Appeal Board to deal itself with its allowability. The public's and the parties' interest in having the proceedings speedily concluded may then be overridden by the requirement that appeal proceedings should not become a mere continuation of first- instance proceedings (point 3 of the Reasons).
3. [...]

The full text of the decision can be found here.